WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WPP Properties v. Lin Yu
Case No. D2016-1232
1. The Parties
Complainant is WPP Properties of New York, New York, United States of America, represented by Davis & Gilbert LLP, United States of America.
Respondent is Lin Yu of Guangzhou, China.
2. The Domain Names and Registrar
The disputed domain names <china-cmwpp.com>, <china-wpp.cc>, <china-wpp.com> and <china-wpp.net> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2016. On June 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding annexes to the Complaint, Complainant submitted the updated annexes to the Complaint on June 20, 2016.
The Center verified that the Complaint together with the updated annexes to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 13, 2016.
The Center appointed Yijun Tian as the sole panelist in this matter on July 20, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant, WPP Properties, is a company incorporated in New York, New York, United States of America. It is a subsidiary of WPP Group USA, Inc, a Delaware Corporation. It is one of the world’s leading marketing and communications companies. Complainant has nearly 200,000 employees in 3,000 offices in 112 countries around the world.
Complainant is the exclusive owner of the WPP mark (the “WPP Mark” or “WPP Marks”) since 1995, including a trademark registration in China since 2009 (registration number 5735474) (Annex 5 to the Complaint). Complainant also owns numerous domain names which the contain WPP Mark, such as <wpp.com> and <wppchina.cn> (Annex 7 to the Complaint).
Respondent is Lin Yu of Guangzhou, China. The disputed domain names were registered, using the same registrar, using the same email address.
The disputed domain names <china-wpp.cc>, <china-wpp.com> and <china-wpp.net> were all registered on April 21, 2016; and the disputed domain name <china-cmwpp.com> was registered May 23, 2016. The registration dates of all disputed domain names are long after the WPP Marks were registered.
5. Parties’ Contentions
A. Complainant
Complainant contends that the disputed domain names are substantially identical to the WPP Marks in which Complainant has rights. The only difference is the addition of the geographically descriptive term “China”, or in one case “cm”, which is a rough translation of the Chinese characters for “Charity Mutual Assistance”, a term describing the services offered by Respondent.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant contends that the disputed domain names were registered and are being used in bad faith.
Complainant requests that the disputed domain names <china-cmwpp.com>, <china-wpp.cc>, <chin‑wpp.com> and <china-wpp.net> be transferred to it.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) the disputed domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the WPP Marks acquired through registration. The WPP Marks have been registered worldwide since 1995, and Complainant has a widespread reputation as one of the world’s leading marketing and communications companies. Complainant has nearly 200,000 employees in 3,000 offices in 112 countries around the world.
The disputed domain names <china-wpp.cc>, <china-wpp.com> and <china-wpp.net> comprise the WPP Mark in its entirety. The disputed domain names simply connect the WPP Mark with the prefix “china-”. This does not eliminate the identity or the confusing similarity between Complainant’s registered trademark and the disputed domain names.
The disputed domain name <china-cmwpp.com> contains the WPP Mark in its entirety also. The disputed domain name only differs from Complainant’s trademark by the addition of the English word “china” with a hyphen “-” and Latin letters “cm”. This does not eliminate the identity or the confusing similarity between Complainant’s registered trademark and the disputed domain name.
Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
Generally a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it” (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087).
The addition of the word “china” with a hyphen “-” and/or “cm” as a prefix or prefixes to Complainant’s mark fails to distinguish the disputed domain names from Complainant’s trademark. By contrast, it may increase the confusing similarity. Complainant is one of the world’s leading marketing and communications companies (as mentioned above). Internet users who visit Respondent’s websites are likely to be confused and may falsely believe that the disputed domain names are operated by Complainant for providing WPP-branded products or services in China.
Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain names and the WPP Marks.
The Panel therefore holds that the Complaint fulfils the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain names:
(i) use of, or preparations to use, the disputed domain names in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has commonly been known by the disputed domain names; or
(iii) legitimate noncommercial or fair use of the disputed domain names.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Ediation (“WIPO Overview 2.0”), paragraph 2.1 and cases cited therein).
Complainant has rights in the WPP Mark globally since 1995. According to Complainant, it is one of the world’s leading marketing and communications companies, and has registered trademark rights in China since 2009. It has also set up a website particularly focusing on the Chinese market “www.wppchina.cn”.
Moreover, Respondent is not an authorized dealer of WPP branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain names in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the words “wpp” in its business operation or the use of the WPP Marks and design on its websites (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the WPP Mark or to apply for or use any domain name incorporating the WPP Mark.
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain names. The disputed domain names <china-wpp.cc>, <china-wpp.com> and <china-wpp.net> were all registered on April 21, 2016; and the disputed domain name <china-cmwpp.com> was registered May 23, 2016. The registration dates of all disputed domain names are long after the WPP Mark became widely known. The disputed domain names are identical or confusingly similar to Complainant’s WPP Mark.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain names. By contrast, according to the information provided by Complainant, Respondent was advertising and offering purported WPP products and services at the website of the disputed domain name <china-wpp.cc> (Annex 10 to the Complaint).
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain names. The Panel therefore holds also taking into consideration the Panel’s findings below, that Complainant has established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain names in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain names; or
(ii) Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding disputed domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product or service on Respondent’s websites or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain names in bad faith.
a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the WPP Marks with regard to its products or services. Complainant has registered its WPP Marks internationally, including China. Moreover, the website at the disputed domain name <china-wpp.cc> advertises for sale various purported WPP products or services.
Respondent would likely not have advertised products or services purporting to be WPP products or services on this website if it was unaware of WPP’s reputation. In other words, it is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain names.
The Panel therefore finds that the WPP Mark is not a mark that a trader would randomly adopt for the purpose other than to create an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Thus, the Panel concludes that the disputed domain names were registered in bad faith with the intent to create an impression of an association with Complainant’s WPP-branded products or services.
b) Use in Bad Faith
Complainant has adduced evidence to prove that by using the disputed domain names, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” purportedly offering Complainant’s WPP-branded products and services without authorization.
To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
Given the widespread reputation of the WPP Marks (as well as the content on Respondent’s website at the disputed domain name <china-wpp.cc> mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. In other words, Respondent has through the use of the disputed domain name created a likelihood of confusion with the WPP Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential Internet users are led to believe that the website at the disputed domain name <china-wpp.cc> is either Complainant’s site or the site of an official authorized agent of Complainant, which is not the case. The Panel noticed that the disputed domain name <china-wpp.cc> is currently inactive, but this does not affect the Panel’s finding that the disputed domain name is being used by Respondent in bad faith.
Moreover, Complainant contends that the disputed domain names were registered and are being used in bad faith. Respondent is in default and has not replied to factual allegations of Complainant. The Panel therefore draws appropriate inferences from the Respondent’s default, and concludes that the disputed domain names <china-wpp.cc>, <china-cmwpp.com>, <china-wpp.com> and <china-wpp.net> are being used by Respondent in bad faith.
The Panel has also conducted an independent search to identify the current status of the disputed domain names <china-cmwpp.com>, <china-wpp.com> and <china-wpp.net>.
Regarding the disputed domain name <china-cmwpp.com>, the website at the disputed domain name is currently providing “Torrent Downloads” service.1 Given the widespread reputation of the WPP Marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name <china-cmwpp.com> (which contains WPP Mark in its entirety, as discussed in 6.A) has a connection with Complainant, contrary to the fact). There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. In other words, Respondent has through the use of the disputed domain name created a likelihood of confusion with the WPP Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential Internet users are led to believe that the website at the disputed domain name <china-cmwpp.com> is either Complainant’s site or the site of an official authorized agent of Complainant, which is not the case. As such, it is reasonably believed that Respondent is currently using WPP’s reputation to attract the visits to “www.china-cmwpp.com” (“Torrent Downloads” website), and to obtain commercial gain.
The Panel therefore concludes that the disputed domain name <china-cmwpp.com> is being used by Respondent in bad faith.
Regarding the disputed domain names <china-wpp.com> and <china-wpp.net>, at the time this decision is rendered, the disputed domain names are currently inactive. In terms of inactive domain names, the WIPO Overview 2.0 provides: “[w]ith comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith” (paragraph 3.2, WIPO Overview 2.0). The WIPO Overview 2.0 further states: “[t]he panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
Based on information provided by Complainant, Complainant has a widespread reputation as one of the world’s leading marketing and communications companies, and has nearly 200,000 employees in 3,000 offices in 112 countries around the world. WPP Marks have been registered worldwide since 1995. As such, Complainant’s WPP Marks, arguably, are widely known. Taking into account all the circumstances of this case, the Panel concludes that the passively held disputed domain names <china-wpp.com> and <china-wpp.net> are used by Respondent in bad faith also.
In summary, Respondent, by choosing to register and use the disputed domain names, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant and/or to disrupt the business of Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain names and the conduct of Respondent as far as the use of the disputed domain names are indicative of registration and use of the disputed domain names in bad faith.
The Panel therefore holds that the Complaint fulfils the third element of paragraph 4(a) of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <china-cmwpp.com>, <china-wpp.cc>, <china-wpp.com> and <china-wpp.net> be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: August 17, 2016